USPTO Patents Application 10561839

PATENT COOPERATION TREATY

From the

Irecd 11 NOV 2005

To:

see form PCT/ISAi220 •

s v J 1

WRITTEN OPINION OF THE
INTERNATIONAL SEARCHING AUTHORITY

(PCTRule436/s.1)

Date of mailing

(dayAnonthfyear) see form PCT/1SAj21 O (second sheet)

Applicant's or agent's file reference
see form PCT/ISA/220

FOR FURTHER ACTION

See paragraph 2 below

Internationa) application No.
PCT/IL2005/000719

International filing date (dayAnanthfyear)
06.07.2005

Priority date {day/month/year)
07.07.2004

International Patent Classification (IPC) or both national classification and IPC
G01N15/14

Applicant

MOLECULAR CYTOMICS LTD.

This opinion contains indications relating to the following items:

Box

No.

I

Box

No.

II

Box

No.

III

□

Box

No.

IV

Box

No.

V

□

Box

No.

VI

□

Box

No.

VII

0

Box

No.

VIII

Priority

Non-establishment of opinion with regard to novelty, inventive step and industrial applicability
Lack of unity of invention

Reasoned statement under Rule 43b/s.1 (a)(1) with regard to novelty, inventive step or industrial
applicability; citations and explanations supporting such statement

Certain documents cited

Certain defects in the international application

Certain observations on the inter nation a! application

2. FURTHER ACTION

If a demand for international preliminary examination Is made, this opinion will usually be considered to be a
written opinion of the International Preliminary Examining Authority ("I PEA*). However, this does not apply where
the applicant chooses an Authority other than this one to be the IPEA and the chosen IPEA has notifed the
international Bureau under Rule 66.1b/s(b) that written opinions of this International Searching Authority
will not be so considered.

If this opinion is, as provided above, considered to be a written opinion of the IPEA, the applicant Is invited to
submit to the IPEA a written reply together, where appropriate, with amendments, before the expiration of three
months from the date of mailing of Form PCTASPJ220 or before the expiration of 22 months from the priority date,
whichever expires later.

For further options, see Form PCT/ISA£20.

3. For further details, see notes to Form PCTrfSA/220.

Name and mailing address of the ISA:

European Patent Office
D-80298 Munich

Tel. +49 89 2399 - 0 Tx: 523656 epmu d
Fax: +49 89 2399 - 4465

Authorized Officer

Jakober, F

Telephone No. +49 89 2399-7688

Cm

Form (PCTJISA/237) (Cover Sheet) (January 2004)

WRITTEN OPINION OF THE
INTERNATIONAL SEARCHING AUTHORITY

International application No.
PCT/IL2OO5/0OO719

Box No. I Basis of the opinion

1 . With regard to the language, this opinion has been established on the basis of the international application in
the language in which it was filed, unless otherwise indicated under this item.

□ This opinion has been established on the basis of a translation from the original language into the following
language , which is the language of a translation furnished for the purposes of international search
(under Rules 12.3 and 23.1 (b)).

2. With regard to any nucleotide and/or amino acid sequence disclosed in the international application and
necessary to the claimed invention, this opinion has been established on the basis of:

a. type of material:

□ a sequence listing

□ tabie(s) related to the sequence listing

b. format of material:

□ in written format

□ in computer readable form

c. time of filing/furnishing:

□ contained in the international application as filed.

□ filed together with the international application in computer readable form.

□ furnished subsequently to this Authority for the purposes of search.

3. □ In addition, in the case that more than one version or copy of a sequence listing andybr table relating thereto

has been filed or furnished, the required statements that the information in the subsequent or additional
copies is identical to that in the application as filed or does not go beyond the application as filed, as
appropriate, were furnished.

4. Additional comments:

Box No. 11 Priority

1 . 13 The validity of the priority claim has not been considered because the International Searching Authority

does not have in its possession a copy of the earlier application whose priority has been claimed or, where
required a translation of that earlier application. This opinion has nevertheless been established on the
assumption that the relevant date (Rules 436/s.l and 64.1) is the claimed priority date.

2. □ This opinion has been established as if no priority had been claimed due to the fact that the priority claim

has been found invalid (Rules 43b/s.1 and 64.1). Thus for the purposes of this opinion, the international
filing date indicated above is considered to be the relevant date.

3. Additional observations, if necessary:

Form PCTASA/237 (January 2004)

WRITTEN OPINION OF THE
INTERNATIONAL SEARCHING AUTHORITY

International application No.
PCT/1L2005/000719

Box No. Ill Non-establishment o1 opinion with regard to novelty, inventive step and industrial
applicability

The questions whether the claimed invention appears to be novel, to involve an inventive step (to be non
obvious), or to be industrially applicable have not been examined in respect of:

□ the entire international application,

S claims Nos. 13-39

□ the said international application, or the said claims Nos. relate to the following subject matter which
does not require an international preliminary examination (specify):

El the description, claims or drawings (indicate particular elements below) or said claims Nos. 13-39 are so
unclear that no meaningful opinion could be formed (specify):

see separate sheet

□ the claims, or said claims Nos. are so inadequately supported by the description that no meaningful opinion
could be formed.

□ no international search report has been established for the whole application or for said claims Nos.

□ the nucleotide andfor amino acid sequence listing does not comply with the standard provided for in Annex
C of the Administrative Instructions in that:

the written form □ has not been furnished

□ does not comply with the standard

the computer readable form □ has not been furnished

□ the tables related to the nucleotide andfor amino acid sequence listing, if in computer readable form only, do
not comply with the technical requirements provided for in Annex C-bis of the Administrative Instructions.

□ See separate sheet for further details

because:

does not comply with the standard

Form PCT/1SA/237 (January 2004)

WRITTEN OPINION OF THE
INTERNATIONAL SEARCHING AUTHORITY

International application No.
PCT/1L2005A)00719

Box No. V Reasoned statement under Rule 43b/s.1 (a)(i) with regard to novelty, inventive step or
industrial applicability; citations and explanations supporting such statement

1. Statement

Novelty (N)

Yes:

Claims

No:

Claims

1,2,40,76,78,82,84

Inventive step (IS)

Yes:

Claims

No:

Claims

3-12,41 -75,77,79-81 ,85-95

Industrial applicability (IA)

Yes:

Claims

1-95

No:

Claims

2, Citations and explanations
see separate sheet

Box No. VIH Certain observations on the international application

The following observations on the clarity of the claims, description, and drawings or on the question whether the
claims are fully supported by the description, are made:

see separate sheet

Form PCTJISA/ 237 (Januaiy 2004)

WRITTEN OPINION OF THE
INTERNATIONAL SEARCHING
AUTHORITY (SEPARATE SHEET)

Internationa! application No.
PCT/IL2005/000719

well-bearing component having a lower surface, an upper surface and a side; a
plurality of wells disposed on said upper surface and a light source configured to
illuminate said well bearing component. D1 discloses an illumination from the
lower/upper surface, however it is well known in the art to use lateral illumination as
disclosed in document D6 so that the subject-matter of claim 76 cannot be
considered as involving an inventive step (Article 33(3) PCT).

3. Dependent claims 2 to 1 2, 41 to 75, 77, 79 to 81 , 83 and 85 to 95 do not contain any
features which, in combination with the features of any claim to which they refer,
meet the requirements of the PCT in respect of novelty and/or inventive step, see
documents D1 to D6 and the corresponding passages cited in the search report.

Re Item VIII

Certain observations on the international application

1 . Paragraph line 1 6 to 20 of page 45 renders the scope of the application and therefore
the scope of protection very obscure because the features which could be combined
in different embodiments are not mentioned so that the corresponding object is not
defined (Article 6 PCT).

2. The "spirit and scope" clause used page 54, line 25 is vague and unclear and serves
only to cast unnecessary doubt upon the intended scope of the claims (Article 6
PCT).

3. Claims 1 and 1 3 refer to a method of identifying an image of a well in an image of a
well bearing component. However, all the step defined in the claims refers to a
method of acquiring an image and certainly not to a method of identifying an object in
an image. The claims are therefore unclear (Article 6 PCT).

4. Some of the claims refer to a focal point of a feature. This expression is very unclear
because the feature is not define (Article 6 PCT).

PCT/ISA/237 (Separate Sheet) (Sheet 3) (EPO-January 2004)